King Ranch IP, LLC v. Antonio Brown
Claim Number: FA2010001916318
Complainant is King Ranch IP, LLC (“Complainant”), represented by Stephanie Schmidt of Norton Rose Fulbright US LLP, Texas, USA. Respondent is Antonio Brown (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kingranch.network>, registered with Namecheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 8, 2020; the Forum received payment on October 8, 2020.
On October 9, 2020, Namecheap, Inc. confirmed by e-mail to the Forum that the <kingranch.network> domain name is registered with Namecheap, Inc. and that Respondent is the current registrant of the name. Namecheap, Inc. has verified that Respondent is bound by the Namecheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kingranch.network. Also on October 9, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 28, 2020.
On October 30, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Magalhães Machado as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates a ranch under the KING RANCH mark that covers 825,000 acres, and is a major agribusiness with interests in cattle ranching; citrus, cotton, grain, sugar cane, turf grass and farming; recreational hunting; and luxury retail goods sold via the historic King Ranch Saddle Shop, having first registered the domain name king-ranch.com in 1996 continuously maintaining the registration for king-ranch.com since that time. In this regard, Complainant argues that the KING RANCH mark has been used in commerce for over 160 years as well as that it has obtained dozens of federally registered trademarks for its KING RANCH mark.
In this sense, Complainant alleges that the disputed domain name is confusingly similar to the Complainant's KING RANCH registered marks. Complainant argues Respondent’s <kingranch.network> domain name is identical or confusingly similar to Complainant’s distinctive mark as Respondent only adds the “.network” gTLD to Complainant’s fully incorporated mark.
The Complainant also claims that the Respondent has no rights or legitimate interests in the <kingranch.network> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to pass off as Complainant to sell player-versus-player network services for the internet game Minecraft.
Moreover, Complainant argues that Respondent has registered and uses the <kingranch.network> domain name in bad faith considering that Respondent would have been using the <kingranch.network> domain name to intentionally attract internet users to Respondent’s website and to mislead users as to its affiliation, sponsorship, or endorsement by King Ranch, all for Respondent’s own commercial gain.
In this regard, Complainant claims that the disputed domain name resolves to website that is prominently displaying Complainant’s logos and trademarks, evidencing not only Respondent’s prior knowledge of Complainant’s registered trademarks as well as Respondent’s intention of misleading users by creating a likelihood of confusion with Complainant’s mark for commercial gain.
B. Respondent
The Respondent has consented to transfer of the disputed domain name to the Complainant.
Additionally, Respondent has claimed that the original website redirected by the disputed domain name was not linked to the page examined by the Complainant. Respondent claims that the <kingranch.network> website was made available on March 15, 2020. According to the Respondent, the last update published to this domain was on April 2, 2020. Since this date, the disputed domain name has remained mostly inactive. During the period between the final update and the commencement of the dispute, the website was reset and included the addition of a redirected page on the tab listed “Shop”.
According to the Respondent, the website was established as an April Fool’s joke, and the structure of the website was developed to mimic another player-versus-player website using the KING RANCH Mark.
In any case, Respondent consents to the remedy requested by the Complainant and agree to transfer the ownership of the disputed domain to King Ranch IP, LLC.
Complainant operates a major agribusiness under the KING RANCH mark since at least 1853.
Complainant has rights in the KING RANCH mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,351,707, registered May 23, 2000). See Compl. Ex. C
Complainant is also the owner of the domain name <king-ranch.com since 1996. See Compl. Ex. D.
According to the WHOIS information, the disputed domain name was registered on March 8, 2020.
The disputed domain name does not currently redirect to any active websites. However, as disclosed by Compl. Exs. E and F, the disputed domain name previously redirected to a website that sells player-versus-player network services for the internet game Minecraft.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the required rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
The Complainant has established rights related to its KING RANCH mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,351,707, registered May 23, 2000). See Compl. Ex. C. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Complainant has rights in the KING RANCH mark under Policy ¶ 4(a)(i).
In this sense, the Panel finds that the disputed domain name is confusingly similar to Complainant’s KING RANCH mark since the disputed domain name reproduces the entirety of the KING RANCH mark with the mere addition of the “network” gTLD, which does not avoid a finding of identity or confusing similarity under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”).
Thus, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Considering the documents attached to the file, the Panel finds that Respondent does not own any rights or legitimate interests in the disputed domain name.
As claimed by the Complainant and not refuted by the Respondent, Respondent is not commonly known by the disputed domain name nor has it ever been licensed or authorized to register or to use Complainant’s marks.
According to the information available at WHOIS, Respondent is Antonio Brown, evidencing that it is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Moreover, from the evidence attached to the complaint (Compl. Exs. E and F.), Respondent failed to use the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Specifically, Respondent used the disputed domain name to resolve to a webpage which shows Complainant’s registered KING RANCH mark and Complainant’s W design mark in connection with the online game Minecraft, as well as a screenshot of the resolving page of the “SHOP” link on the disputed domain name’s webpage. In this sense, Respondent’s use of the disputed domain name can be considered as an attempt to pass off as Complainant to sell player-versus-player network services for the internet game Minecraft. Using a disputed domain name to pass off as a complainant by displaying marks associated with the complainant to further a commercial gain may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”)
In this sense, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed domain name has been registered and is being used in bad faith by the Respondent pursuant to Policy 4(b)(iv) as it reproduces Complainant’s registered KING RANCH mark in an attempt to attract internet users to the disputed domain name for commercial gain.
As per screenshots provided by Compl. Exs. E and F, the disputed domain name, which wholly reproduces Complainant’s KING RANCH mark, was being used by Respondent to resolve to a website displaying Complainant’s KING RANCH and W design mark, associated with sales related to the internet game Minecraft.
In this sense, Respondent’s use of the disputed domain name can be considered as an attempt to pass off as the Complainant and attract Internet users for financial gain by passing off as the Complainant so to sell access to player-versus-player network services for the internet game Minecraft.
In this regard, registering a disputed domain name that deceives Internet users into believing an affiliation exists between a respondent and a complainant for the purpose of financial gain evidences bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Moreover, it is clear that Respondent had prior knowledge of Complainant’s rights in the KING RANCH mark at the time of the registration of the disputed domain name considering that, as already mentioned, the disputed domain name resolved to a webpage clearly displaying Complainant’s KING RANCH logo and W design mark. Prior knowledge of Complainant’s mark also constitutes a bad faith indication in the registration and use of a domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). In this regard, Respondent even acknowledges its prior knowledge of Complainant’s mark in its response while affirming that the website was established as an April Fool’s joke (“This website was established as an April Fool’s joke, and the structure of the website was developed to mimic another player-versus-player website using the King Ranch Mark”).
In light of the above, the Panel finds that Respondent has registered and was using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ordered that the <kingranch.network> domain name be TRANSFERRED from Respondent to Complainant.
Eduardo Magalhães Machado, Panelist
Dated: November 9, 2020
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